Wednesday, June 20, 2018

TTAB Test: Are Collectible Toy Figures Related to Plush Toys For Purposes of Section 2(d)?

The USPTO refused registration of the mark PINT SIZE HEROES in standard character and Stylized form for "Collectable toy figures," finding confusion likely with the registered mark PINT SIZE PRODUCTIONS & Design for “plush toys; stuffed and plush toys; stuffed toy animals" [PRODUCTIONS disclaimed]. On appeal, applicant argued that it was not seeking to register its mark for plush or stuffed animals, that registrant's customers are shopping for baby board books that are accompanied by stuffed toys, and that the marks are different because applicant's mark is "ironic" while the cited mark is literal. How do you think this came out? In re Funko, LLC, Serial Nos. 87171233 and 87171228 (March 15, 2018) [not precedential] (Opinion by Judge David K. Heasley).


The Goods: As to applicant's assertion that it is not seeking registration of its mark for plush toys, the Board observed that "the identifications are not mutually exclusive, as collectable toy figures can consist of stuffed and/or plush toys." Applicant itself sells plush toys that are collectable toy figures and so the good in the identifications can overlap. Applicant also argued that registrant's customers are shopping for baby books sold with accompanying stuffed toys, but the Board must consider the goods as described in the application and cited registration, without extrinsic evidence of actual use.



Examining Attorney Katerina D. Satanovsky submitted a raft of evidence to show the relatedness of the goods, including Internet web pages and some 40 use-based third-party registrations covering the types of goods at issue. The Board found these registrations to be "persuasive evidence that the identified goods are of a type that may emanate from a single source under a single mark."

Thus the second du Pont factor weighed in favor of a finding of likely confusion.

Channels of Trade: The evidence showed that toy figures and stuffed toys are offered for sale in the same channels of trade - retail toy stores like Buy Buy Baby and Disney Store - to the same classes of consumers.

The Marks: As to the standard character mark PINT SIZE HEROES, applicant contended that its mark "immediately communicates irony, especially when used in connection with collectable super-her figures. In contrast, PINT SIZE PRODUCTIONS is literal: the goods feature and are for babies and toddlers." The Board, however, found the marks to be "more similar than dissimilar, in important respects."

The first two words in the marks are the same, and the prominence of PINT SIZE is enhanced by its placement at the beginning of both marks. The pronunciation and meaning of PINT SIZE would be the same in both marks. Moreover, the marks have the same structure, with the dominant component PINT SIZE followed by a single word. "Applicant's attempt to distinguish its mark's 'ironic' commercial impression is unavailing, for if the dominant portion of both marks is the same, then the marks may be confusingly similar notwithstanding peripheral differences." Given the related nature of the goods, the applied-for mark could be taken by consumers as another line of goods produced by PINT SIZE PRODUCTIONS.

As to its stylized mark, applicant contended that the marks differ in appearance, emphasis, and pronunciation. It claimed that HEROES is the dominant part of its mark, since it is twice the size of PINT SIZE, and the letter "H" is the leftmost portion of the mark and will be the first read. The cited mark, on the other hand, emphasizes PINT SIZE. Moreover, the registered mark is in pastel colors with a child-like handwriting style. "Funko's brand is built on striking pop-culture graphics, and PSP's is built on soft, warm, cuddly graphics."

The Board, however, agreed with the examining attorney that the verbal similarity between the marks outweighs their dissimilarity in design. The "verbal portion" of a word + design mark will likely appear alone in text and will be spoken when consumers ask for the goods. Of course, applicant's mark (with no color claim) could be used in colors similar to those of the registered mark.

Applicant's suggestion that HEROES would be the first word read in its mark was belied by its own application and its appeal brief, which refer to the mark as consisting of "the stylized text "PINT SIZE HEROES.'" The smaller sized text used for PINT SIZE serves to "reinforce the connotation and commercial impression that the toy figures are PINT SIZE - i.e., very small." Therefore the term PINT SIZE is likely to make a greater impression upon consumers.

Conclusion: Finding that confusion is likely, the Board affirmed the Section 2(d) refusals.


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Text Copyright John L. Welch 2018.

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